USA Patent Reform

THE AMERICA INVENTS ACT
The Most Significant Patent Law Reform
Since 1952 and How It Affects Your Clients
17 November 2011

Clark A. D. Wilson
Patent & Trademark Attorney
email: cwilson@gardnergroff.com
phone: (770) 984-2300

www.gardnergroff.com

© 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved

USA Patent Law History

The Congress shall have power...To
promote the progress of science and
useful arts, by securing for limited
times to authors and inventors the
exclusive right to their respective
writings and discoveries;

-US Constitution, Art. 1, Sec. 8(8)
(1789)



1790- First US Patent Act drafted in the US Constitution
•First patent granted by Thomas Jefferson for the ―making of pot
ash and pearl ash by a new apparatus and process‖



1836- Patent number 1 issues
•Traction Wheels



1946- In order to receive a patent, one had to be the ―first to invent‖
in the world; later amended to ―first to invent‖ in the USA.
(Storage Battery v. Shimadzu)

1952- The basic structure of the modern Patent Law laid out:
• An inventor had to describe not only his invention, but also the
basis for its infringement
• An invention needed to be new and useful, as well as non-
obvious

1968- Patent Cooperation Treaty is signed

1995- Uruguay Round Agreements Act adopted to align international
patent regimes

YET: USA remained ―First to Invent‖ and the rest of the world was
―First to File‖



August 16, 2011- Patent number 8,000,000 issues
•Visual Prosthesis



September 16, 2011-President Obama Signs Patent Reform Law
•Signed at Thomas Jefferson High School for Science and Technology in
Alexandria, Virginia


Key Changes

• FIRST TO INVENT  FIRST INVENTOR TO FILE
• INCREASE IN FEES + MICROENTITY DISCOUNT
• ADDITIONAL PROSECUTION CHANGES
• POST-GRANT PROCEDURES


First Inventor to File
• 35 USC 102 establishes a First Inventor To File system.

• On or after March 16, 2013, a claimed invention is not novel if:
―was patented, described in a printed publication, or in
public use, on sale, or otherwise available to the public
before the effective filing date of the claimed invention.‖

―was described in a patent issued under section 151, or in
an application for patent published or deemed
published under section 122(b), in which the patent or
application, as the case may be, names another inventor
and was effectively filed before the effective filing date of
the claimed invention.‖


Exceptions under 35 USC 102
102(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed
invention shall not be prior art to the claimed invention under subsection (a)(1) if--
(A) the disclosure was made by the inventor or joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the inventor or a joint
inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed
by the inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor.

102(b)(2) A disclosure shall not be prior art to a claimed invention under subsection
(a)(2) if-
(A) the subject matter disclosed was obtained directly or indirectly from the
inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed
under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective
filing date of the claimed invention, were owned by the same person or subject to an
obligation of assignment to the same person


• Once the first-inventor-to-file provisions take effect on March
16, 2013, would someone who copies my idea and files a patent
application on the subject matter before I do be entitled to a patent?
• No. Only inventors are entitled to a patent. Someone who copies
another’s idea cannot be the inventor.

• My co-inventor disclosed our invention at a trade show one month
before the filing date of our application. Will that disclosure prevent us
from obtaining a patent?
• No. Regardless of whether the application was filed before or after the
first-inventor-to-file provisions take effect on March 16, 2013, disclosure
one month prior to a filing date is not prior art to the claimed invention by
virtue of a one year grace period.

www.uspto.gov


Going Forward
• It is more important than ever for inventors to carefully determine
whether or not they are going to seek patent protection or not.

• If yes, then file ASAP
• Provisional Patent Applications are a cheaper and quicker

• If not, publish early and often to prevent 3rd party patents

• If invention has already been published, 12 months to file


Fees
• Nearly all PTO fees will be increased by 15%.
• Are there any patent fees that will not be increasing by 15%?
• Fees such as international stage PCT fees, certain petition
fees, enrollment fees, and service fees will not be increasing by 15%.
• On what date will I have to begin paying the 15% increase?
• September 26, 2011.

www.uspto.gov


Prioritized Examination
• What is prioritized examination?
• Expedited review of a patent application for an additional fee. The
Office’s goal is to provide a final disposition within 12 months of
prioritized status being granted.

• What types of applications are eligible for Prioritized Examination?
• Nonprovisional utility and plant patent applications with no more than 4
independent claims, 30 total claims, and no multiple dependent claims
filed on or after September 26, 2011. Requests for Prioritized
Examination of utility patent applications must be filed using EFS-
Web. The request for prioritized examination must be present on filing
of the utility or plant application.
• What fees are required?
• $4,800 fee ($2,400 small entity)
• What is the effective date of prioritized examination?
www.uspto.gov


Micro Entity – 75% discount
• ‗The term ‗micro entity‘ means an applicant who makes a certification that it—
• ‗‗(1) qualifies as a small entity (includes universities).
• ‗‗(2) has not been named as an inventor on more than 4 previously filed
patent applications, other than applications filed in another
country, provisional applications under section 111(b), or international
applications filed under the treaty defined in section 351(a) for which the
basic national fee under section 41(a) was not paid;
• ‗‗(3) did not, in the calendar year preceding the calendar year in which the
applicable fee is being paid, have a gross income, as defined in section 61(a)
of the Internal Revenue Code of 1986, exceeding 3 times the median
household income for that preceding calendar year, as most recently reported
by the Bureau of the Census; and
• ‗‗(4) has not assigned, granted, or conveyed, and is not under an obligation
by in the application concerned to an entity that, in the calendar year
preceding the calendar year in which the applicable fee is being paid, had a
gross income, as defined in section 61(a) of the Internal Revenue Code of
1986, exceeding 3 times the median household income for that preceding
calendar year, as most recently reported by the Bureau of the Census
• Effective September 16, 2011.


False Marking

292(b) FALSE MARKING.—
(1) CIVIL PENALTY.—Section 292(a) of title 35, United
States, Code, is amended by adding at the end the following:
‗‗Only the United States may sue for the penalty authorized
by this subsection.‘‘.
(2) CIVIL ACTION FOR DAMAGES.—Subsection (b) of section
292 of title 35, United States Code, is amended to read as
follows:
‗‗(b) A person who has suffered a competitive injury as a result
of a violation of this section may file a civil action in a district
court of the United States for recovery of damages adequate to
compensate for the injury.‘‘.

(3) EXPIRED PATENTS.—Section 292 of title 35, United
States Code, is amended by adding at the end the following:
‗‗(c) The marking of a product, in a manner described in subsection
(a), with matter relating to a patent that covered that
product but has expired is not a violation of this section.‘‘.

Advice of Counsel

‗‗The failure of an infringer to obtain the advice of counsel
with respect to any allegedly infringed patent, or the failure of
the infringer to present such advice to the court or jury, may
not be used to prove that the accused infringer willfully infringed
the patent or that the infringer intended to induce infringement
of the patent.‘‘.


Derivation Proceedings
• What is a Derivation proceeding?
• A proceeding to prove that a third-party applicant derived the subject
matter for its application from the Petitioner. A petitioner must claim the
same or substantially the same invention as the earlier application’s
claimed invention. The petition must be supported by substantial
evidence that the earlier claimed invention was derived from petitioner,
and filed without authorization.
• Who may file a petition for a Derivation proceeding and when should
the petitioner file?
• An applicant for patent may file a petition for a derivation
proceeding. The petition must be filed within one year of first publication
of a claim to an invention that is the same or substantially the same as
the earlier application’s claim to the invention.
• What is the effective date of the Derivation provision?
www.uspto.gov


Pre-issuance Submissions by Third Parties

• Any third party may submit for consideration and inclusion in the
record of a patent application, any patent, published patent
application, or other printed publication of potential relevance to the
examination of the application, if such submission is made in writing
before the earlier of— ‗‗(A) the date a notice of allowance is given or
mailed; or
• ‗(B) the later of— (i) 6 months after the date on which the application
for patent is first published by the Office, or (ii) the date of the first
rejection of any claim by the examiner during the examination.
• ‗‗(2) OTHER REQUIREMENTS.—Any submission under paragraph
(1) shall— (A) set forth a concise description of the asserted
relevance of each submitted document; ‗(B) be accompanied by
such fee as the Director may prescribe; and ‗(C) include a statement
by the person making such submission that the submission was
made in compliance with this section.
• Effective Date: September 16, 2012


Inter Partes Reexamination
• The AIA change the standard for inter partes reexamination.
• Section 6 of the AIA elevates the standard for granting a request
for inter partes reexamination. Under the new standard, the information
presented in an inter partes reexamination request must provide a
showing that there is a reasonable likelihood that the requester will
prevail with respect to at least one of the patent claims challenged in the
request.
• What is inter partes review and when is it available?
• Inter partes review replaces inter partes reexamination as an avenue for
a third party’s patentability challenge and the provision in the AIA
for inter partes review is effective on September 16, 2012.

www.uspto.gov


Inter Partes Review
• What is an inter partes Review proceeding?
• A petitioner may request to cancel as unpatentable 1 or more claims of
a patent based on 102, 103 using patents or printed publications.

• Who may file a petition for an inter partes Review and when should
the petitioner file?
• A person who (a) is not the owner of the patent and (b) has not
previously filed a civil action challenging the validity of a claim of the
patent may file, accompanied by payment of the required fee, a petition
to institute an inter partes The petition must demonstrate a reasonable
likelihood that the petitioner will prevail on at least one claim
challenged. The petition cannot be filed until after the later of: 1) 9
months after the grant of a patent or issuance of a reissue of a patent,
or 2) the date of termination of any post grant review of the patent.

www.uspto.gov


Post Grant Review
• What is a Post Grant Review proceeding?
• A petitioner may request to cancel as unpatentable 1 or more claims of
a patent on any ground that could be raised under paragraph (2) or (3)
of section 282(b). A Post Grant Review is generally limited to patents
issuing from an application filed under the first-inventor-to file system.
• Who may file a petition for a Post Grant Review and when should the
petitioner file?
• Within 9 months from grant or issue of reissue,a person who (a) is not
the owner of the patent and (b) has not previously filed a civil action
challenging the validity of a claim of the patent may file, accompanied by
payment of the required fee. The petition must demonstrate that it is
more likely than not that the petitioner will prevail on at least one claim
challenged or raises a novel question that is important to other patents
or publications.
• What is the effective date of the provisions for Post Grant Review?
www.uspto.gov


Supplemental Examination to
Consider, Reconsider, or Correct Information

• A patent owner may request supplemental examination of a patent
in the Office to consider, reconsider, or correct information believed
to be relevant to the patent.
• Within 3 months after the request is received, the Director shall
conduct the supplemental examination and shall issue a
certificate indicating whether the information presented in the
request raises a substantial new question of patentability.
• If the certificate indicates that a substantial new question of
patentability is raised by 1 or more items of information in the
request the Director shall order reexamination of the patent.
• A patent shall not be held unenforceable based on information
considered in supplemental examination
• Eliminates defense of inequitable conduct
• Effective September 16, 2012


Filing by Other than Inventor
• ‗‗A person to whom the inventor has assigned or is under an
obligation to assign the invention may make an application for
patent. A person who otherwise shows sufficient proprietary interest
in the matter may make an application for patent on behalf of and as
agent for the inventor on proof of the pertinent facts and a showing
that such action is appropriate to preserve the rights of the parties. If
the Director grants a patent on an application filed under this section
by a person other than the inventor, the patent shall be granted to
the real party in interest and upon such notice to the inventor as the
Director considers to be sufficient.‘‘.


Defense to Infringement Based on Prior
Commercial Use

• ‗‗(a) IN GENERAL.—A person shall be entitled to a defense under section
282(b) with respect to subject matter consisting of a process, or consisting of
a machine, manufacture, or composition of matter used in a manufacturing
or other commercial process, that would otherwise infringe a claimed
invention being asserted against the person if—
• ‗‗(1) such person, acting in good faith, commercially used the subject matter
in the United States, either in connection with an internal commercial use or
an actual arm‘s length sale or other arm‘s length commercial transfer of a
useful end result of such commercial use; and
• ‗‗(2) such commercial use occurred at least 1 year before the earlier of
either—
• ‗‗(A) the effective filing date of the claimed invention;
• or
• ‗‗(B) the date on which the claimed invention was disclosed to the public in a
manner that qualified for the exception from prior art under section 102(b).


Best Mode
• What is the impact of AIA‘s amendment concerning Best Mode?
• The failure to disclose the best mode shall no longer be a basis, in
patent validity or infringement proceedings, on which any claim of a
patent may be canceled or held invalid or otherwise unenforceable.

• Does AIA‘s amendment to 35 U.S.C. 282(a)(3) impact current patent
examination practice regarding evaluation of an application for
compliance with the best mode requirement of 35 U.S.C. 112?
• No. As this change is applicable only in patent validity or infringement
proceedings, it does not change current patent examination practices
set forth in MPEP 2165.

• What is the effective date for the Best Mode provision in the AIA?

www.uspto.gov


Big Corporation or Little Guy?
• Who does it benefit?

• First inventor to file makes it cleaner.

• But Best Mode might benefit those with deep pockets.

• Post Grant Review might benefit deep pockets.

• What do you think?


Thank You!
Clark A. D. Wilson
Patent & Trademark Attorney
email: cwilson@gardnergroff.com
phone: (770) 984-2300

www.GardnerGroff.com


USA Patent Reform

Recomendados

Recomendados

Más contenido relacionado

La actualidad más candente

La actualidad más candente (20)

Similar a USA Patent Reform

Similar a USA Patent Reform (20)

USA Patent Reform